WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
VoiceStream Wireless Corporation v. John Pike
Case No. D2001-1224
1. The Parties
Complainant is VoiceStream Wireless Corporation, a Delaware corporation with its principal place of business in Bellevue, Washington, USA.
Respondent is John Pike, an individual, and the technical and administrative contact for APHS Networks, located in Bathurst, Australia.
2. The Domain Name and Registrar
The domain name at issue is <aphsvoicestream.com> (the "Domain Name").
The registrar is Go Daddy Software, Inc.
3. Procedural History
This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").
The Complaint was submitted on October 9, 2001. On October 13, 2001, Go Daddy Software, Inc. confirmed registration of the Domain Names at issue to the Respondent. Respondent failed to submit a response to the Complaint by the deadline of November 18, 2001.
On December 20, 2001, the WIPO Arbitration and Mediation Center appointed Mark B. Partridge, Michael Albert and Dan Hunter as Panelists.
On October 12, 2001, Respondent sent an email to WIPO and Complainant asserting that it had not the annexes to the Complaint. In light of due process concerns that the Respondent had not received all of the claims against it and thereby was unable to respond appropriately, on January 4, 2002, the Panel issued a procedural order calling for Complainant to send the complete complaint, including annexes, to Respondent at the points of contact provided by Respondent. Complainant's counsel sent the documents to Respondent by email, fax and courier. The courier delivery was returned because the Respondent's addresses was incorrect. On numerous subsequent occasions the Center requested that the Respondent provide correct physical and facsimile details. The Respondent failed to reply to any of these requests. We find that WIPO and Complainant have taken all reasonable and necessary steps to provide Respondent with the complete case record. Nevertheless, Respondent has failed to provide any substantive response and is therefore found to be in default.
4. Factual Background
Complainant is a provider of wireless voice and data communication services in the United States and 70 other countries worldwide, including Australia. Complainant has used the "VOICESTREAM" mark since February of 1996 both to identify its goods and services and as the name of the company.
Complainant filed an Intent to Use application with the United States Patent and Trademark Office ("USPTO") for the mark "VOICESTREAM" on October 10, 1995. Complainant first used "VOICESTREAM" in commerce on February 1, 1996, and the mark was registered with the USPTO on March 11, 1997.
On May 10, 2001, Respondent registered the domain name <aphsvoicestream.com> with the registrar Go Daddy Software, Inc. In June of 2001, Complainant learned that Respondent had registered the domain name.
On June 8, 2001, Complainant sent Respondent a letter demanding that Respondent cease using the Domain Name and cooperate in having the registration transferred to Complainant. According to Complainant, on June 13, 2001, Respondent wrote to Complainant and declined to transfer the Domain Name to Complainant. On October 9, 2001, Complainant filed the Complaint under the Policy.
5. Parties’ Contentions
Complainant contends that by incorporating Complainant's mark, VOICESTREAM, verbatim, <aphsvoicestream.com> is confusingly similar to Complainant's mark, which was registered with the USPTO prior to Respondent's registration of the Domain Name.
Complainant also contends that Respondent has no rights or legitimate interest in the Domain Name because, before registering the Domain Name, Respondent was not commonly known by the Domain Name. Rather, Respondent registered the Domain Name for a new product line in connection with Respondent's existing business, APHS Networks.
Finally, Complainant contends that Respondent registered and used the Domain Name in bad faith. Specifically, Complainant argues that Respondent had, at least, constructive notice of Complainant's registered mark before Respondent registered the Domain Name. Complainant also contends that Respondent's incorporation of Complainant's mark into the Domain Name, with only the addition of the APHS identifier, the similarity of the telecommunications products involved, and the fact that this name was neither registered nor used for five years after Complainant began to use its mark, demonstrates that Respondent registered the Domain Name for the purpose of capitalizing on the goodwill generated by Complainant. Complainant further contends that by registering the Domain Name for a new product line in connection with Respondent's existing business, Respondent's registration creates an impression among consumers that Respondent's sites and/or products are affiliated with Complainant. As a result, Complainant contends, Respondent is misleading Internet users who visit the <aphsvoicestream.com> Web site. Such users are likely to believe, among other things, that the <aphsvoicestream.com> Web sites are endorsed, sponsored or operated by, or are affiliated with Complainant.
Respondent failed to file a Response, but according to Complainant's Complaint, Respondent, through correspondence with Complainant, contends that the "APHSVoiceStream" line of products is a division of Respondent's business, and that it had only recently taken on the APHSVoiceStream name, and was previously simply a part of APHS Networks, Ltd.
Our inquiry focuses on three issues: (1) are the Domain Names confusingly similar to a trademark or service mark in which Complainant has rights; (2) does Respondent have a legitimate interest in the Domain Name; and (3) have the Domain Names been registered and used in bad faith? The Complainant has the burden of proof on each of these issues.
A. Confusing Similarity
The record shows that Complainant holds a US federal registration in the mark "VOICESTREAM." The first requirement of paragraph 4 a.(i) is made out: Complainant as registered proprietor of the "VOICESTREAM" mark has requisite rights in a trademark.
Respondent's Domain Name, <aphsvoicestream.com> incorporates, verbatim, Complainant's mark. The "VOICESTREAM" mark is an invented word which, though the concatenation of two English words, is inherently distinctive and not descriptive of the services it provides. Panels have often found that a domain name that incorporates a distinctive mark in its entirety is confusingly similar to the mark. EAuto L.L.C. v. Triple S. Auto Parts, D2000-0047 (WIPO March 24, 2000) (finding that the addition of a word to the end of a distinctive mark created a Domain Name that was confusingly similar to the mark). It is possible, of course, that a domain name comprised of a distinctive mark and additional words may not be confusingly similar, as the additional words alter the sense of the distinctive mark. However, this is not the case here. Because Respondent's Domain Name incorporates Complainant's distinctive mark verbatim and because the prefix "aphs" does not alter the confusion in the minds of users with Complainant’s mark, we find that the Domain Name is confusingly similar to Complainant's mark. Complainant succeeds on this element.
B. Legitimate Interests
Complainant bears the burden of showing that Respondent lacks a legitimate interest in the Domain Name. However, Paragraph 4(c) of the Policy states that if the Panel, based on its evaluation of all the evidence, finds that Respondent: (i) used the Domain Name in connection with a bona fide offering of goods and services; (ii) has been commonly known by the domain name; OR (iii) is making a legitimate noncommercial use of the domain name, the Respondent will be found to have a legitimate interest in the Domain Name.
There is no evidence that Respondent is commonly known by the Domain Name. According to the Complaint and Registrar verification, the Respondent uses the name APHS Networks. Also according to the Complaint, Respondent indicated to Complainant through correspondence that the Domain Name was registered to promote voice-over Internet products.
There is no evidence in the record to indicate that Respondent has actually used the Domain Name to promote a product, or even developed a plan to do so. Because Respondent failed to file a Response, it has failed to rebut Complainant's showing that Respondent is not making use of the Domain Name in connection with a bona fide offering of goods and services.
As a result, Complainant has met its burden of showing that Respondent lacks a legitimate interest in the Domain Name and also succeeds on this element.
C. Bad Faith
Complainant contends that the circumstances under which the Respondent registered and used the Domain Name constitute bad faith. Specifically, Complainant argues that Respondent used the Domain Name to intentionally attract, for commercial gain, Internet users to Respondent's Web site by creating a likelihood of confusion with the Complainant's mark.
Complainant, however, provides no proof in its Complainant that Respondent used, or intended to use, the Domain Name to intentionally attract Internet users to Respondent's Web site by confusing consumers as to the source of the product he is promoting through the site. A mere assertion by Complainant does not prove Respondent registered and used the Domain Name in bad faith.
Although the Complaint fails to provide evidence of Respondent's bad faith use and registration of the Domain Name, Panels have frequently found that where a Respondent registers a Domain Name that is confusingly similar to a Complainant's registered and well-known mark, and Respondent has no legitimate interest in the mark, bad faith can be inferred. Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent's registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant's mark was famous and thus Respondent should have been aware of it).
The question, then, is whether the circumstances outlined in the record warrant such an inference. Simply put, does the Respondent's registration of a Domain Name that is confusingly similar to Complainant's mark make it more likely than not that Respondent has registered the Domain Name in a deliberate attempt to attract users to his Web site for commercial gain due to confusion with Complainant's mark. We believe that the circumstances in the record do create an inference that Respondent registered and used the Domain Name in bad faith.
When registering a domain name, a registrant agrees to abide by the registrar's dispute resolution policy. Under the Policy, the registrant is "required to submit to a mandatory administrative proceeding" for certain types of disputes. When these disputes arise, the dispute resolution service providers give ample notice of the dispute to the registrant, and the Rules inform a registrant that the Panel may draw such inferences as it deems appropriate from a registrant's failure to respond. Failure to file a Response may suggest that the registration was obtained for bad faith purposes. Mars, Incorporated v. Vanilla, Ltd., D2000-0586 (WIPO Sept. 1, 2000) (where Respondent's repeated lack of response was found to suggest bad faith use and registration).
Here, Respondent's failure to file a Response in this case is especially troubling for two reasons. First, Respondent corresponded with Complainant regarding the Domain Name before the Complaint was filed, and Respondent corresponded with the WIPO dispute resolution service provider through electronic mail after the Complaint was filed. The burden of filing a Response is low and counsel is not required. It would have taken little additional effort for Respondent to file a Response to the Complaint.
Second, because the Complaint only provided an inference of Respondent's bad faith use and registration, Respondent may have been able to successfully rebut this inference and prevailed on the last element. Although a good faith use of the Domain Name can be conceived, it would not be proper to infer good faith and reward a registrant who fails to submit to these proceedings. Similarly, a Complainant should not be disadvantaged when a Respondent defaults.
Therefore, we find that, taken together, Respondent's registration of a Domain Name that is confusingly similar to Complainant's registered and well-known mark, and Respondent's failure to file a Response, are sufficient to demonstrate that Respondent registered and used the Domain Name in bad faith.
We also believe the circumstances surrounding Respondent's default provide further support for a finding of bad faith. On October 12, 2001, Respondent's email to WIPO and Complainant stated:
"Please take note that on this day I John Pike Registered Domain Name Owner Principal Director Aphs Network Groups Ltd. & CETO of Aphsvoicestream Ltd. has [sic] commenced action to protect its legal name Aphsvoicestream in FIVE International jurisdictions relevant orders were obtained in ex parte hearing that took place on the 7th December will be air couriered tomorrow to all parties to enure [sic] correct service of the orders obtained. . ."
On October 18, 2001, Respondent acknowledged by email to Complainant and WIPO that it had received the Complaint, stating "We look forward to defending this matter," citing "our history of using such name since 1995" and threatening to use the UDRP policy to attack Complainant's registration of <voicestream.com>.
On January 5, 2002, Respondent acknowledged by email receipt of the Panel's Procedural Order (detailed in section 3 supra), demonstrating again that it received email submissions from WIPO.
Despite Respondent's obvious understanding of the claims and issues in this case, its apparent sophistication about the UDRP process, and its representation that it would provide evidence of its efforts to enforce its rights in its alleged name, Respondent has failed to present any evidence or substantive response. Under Paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences from a default that it deems appropriate. Here the circumstances suggest that Respondent's allegations of prior use and pending legal action are a sham. According, we believe an adverse inference of bad faith registration and use is warranted.
The Domain Name is confusingly similar to the mark in which Complainant has protectable rights. Respondent does not have a legitimate interest in the Domain Name and Respondent registered and used the Domain Name in bad faith. Therefore, Complainant's request for transfer of the domain name <aphsvoicestream.com> is granted.
Mark V. B. Partridge
Dated: February 5, 2002